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Tuesday, 3 August 2010

There is nothing this Kat loves more than bakery related IP stories, especially cupcake litigation (see post here). So this story especially caught her eye via a TechDirt tweet. But before delving into the IP fight, some background is necessary for non-US readers.

The Pillsbury Doughboy is an American advertising icon and mascot for the Pillsbury Company (owned by General Mills) who sells a variety of chilled dough that can be popped in the oven to reveal croissants, cinnamon rolls, buns and cookies. He is, as the name suggests, a "boy" made out of dough. (Picture, left - The Pillsbury Doughboy) His television commercial appearances normally end with a human finger poking his stomach and him responding with a giggle or his trade marked "hoo hoo" (click here to listen). Like Aunt Jemima and the Green Giant before him, the Pillsbury Doughboy enjoys a significant reputation in the US.

So when over eighteen months ago a Salt Lake City resident opened a cookie store called "My Dough Girl" it was only a matter of time until the Pillsbury Dough Boy came a knockin'. My Dough Girl specializes in gourmet cookies named after a specific "Dough Girl" with names such as Penelope, Vivianna and Margo. Like the Pillsbury Doughboy brand, she also sells frozen dough to customers for home baking. When the owner, Tami Cromar, picked the name of her bakery she told NBC affiliate, KSL in Salt Lake City that she went through the proper procedures, namely checking for any potential copyright infringement.

This is supposedly where she went wrong because as many will know this is a trade mark issue, not a copyright issue. The Doughboy then came after her for trade mark infringement when Pillsbury sent her a cease and desist letter this past May demanding she change the name of her business or face a lawsuit. The Pillsbury Company also filed oppositions to The Dough Girl's trade mark applications pending before the USPTO. It is reported that My Dough Girl will be changing their name at a cost of around $50,000 rather than face the costs of litigation.

The fans are not impressed, however, with the organization merely threatening a small business with the prospect of court. A Facebook page devoted to boycotting Pillsbury following its threat to My Dough Girl has drummed up over 800 members in support of Ms.Cromar. A post by Facebook user Cheryl Hawkes Skelton stated:

"Corporations think consumers have no brain power. There is NO way one could possibly confuse the blue and white dough boy with the red sign of My Dough Girl. I haven't purchased Pillsbury in the past, this clinches the deal that I won't in the future."

"Pillsbury's attorneys are far too hungry for billable hours; they should eat some of their own pastries instead. Legal shenanegans (sic) of this nature are frustrating beyond belief, and serve only to underscore the abuses of the legal profession and the greed of mega-corporations. For shame, Pillsbury! What planet are you from? No Pillsbury products for me until you withdraw this ridiculous lawsuit."

This Kat must again reiterate, that as far as she is aware, Pillsbury have only sent a cease and desist letter and have not actually issued proceedings.

Legally speaking, this Kat is skeptical how strong Pillsbury's case really is. The marks and goods are indeed similar when comparing Pillsbury mark as registered, i.e. DOUGHBOY. However, there is something to be said to how the Pillsbury Doughboy is actually refereed to and identified by consumers. This Kat grew up with the Pillsbury Doughboy's reputation, but the link, if any, between the two marks as used is small. This is because in common American nomenclature, the Doughboy is only ever referred to with the "Pillsbury" precursor.

Evidence of actual confusion would be difficult to come by, as well. My Dough Girl operates out of a stand-alone shop, and not, like Pillsbury's products, in every national supermarket through out the US. (Picture, left - is that a litigation ax he is wielding, or just a spatula - you decide) The marketing channels used by the two are extremely different as well. My Dough Girl's marketing seems, as far as can be ascertained, to rely primarily on social networking through its website, Twitter, Facebook page and word of mouth. The Pillsbury Doughboy enjoys multi-network national television campaigns. Further it seems impossible to envisage a scenario where a consumer gets in their car to drive to the grocery store to pick up a can of Pillsbury croissants, drives past My Dough Girl in Salt Lake City, gets confused, stops and purchases their products instead. Economically speaking, as well, if you are in the market for a Pillsbury Doughboy product it is highly unlikely you will be stopping at a gourmet cookie shop instead.

But what about dillution, an astute IPKat reader asks? This Kat believes that the blurring argument is again weaker given the smaller degree of similarity between the marks and the different consumers of the product (thus, decreasing the two's cross-association). And unless Pillsbury would be arguing that the pin-up names of the cookies tarnishes the innocent nature of the Pillsbury Doughboy, she is again unsure how far a dilution argument takes them. For recent dilution case involving Starbucks see this AmeriKat post here.

This Kat believes that this type of threatening conduct by large corporations can actually be more damaging to the reputation of their overall brand than the harm a small business name would actually cause to their trade marks. This Kat suggests that before big businesses blindly send out cease and desist letters they consider the benefit in doing so, not only for their intellectual property protection, but also their brand's reputation.

1 comment:

Anonymous
said...

I am a total non-expert on this but I wonder: would not not have been cheaper for the company also to register an use "Dough Girl" and then have at least a better argument, or possibly even keeping competitors away without heavy handed legal letters?

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